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IP: What every bioscience company needs to know about provisional applications

The shift from a first-to-invent to a first-to-file system could adversely affect pending patent rights

The upcoming changes to the U.S. patent law, and particularly the transition from a first-to-invent to a first-to-file system on March 16, 2013, brings with it some changes that bioscience companies should be aware of and which could adversely impact pending patent rights.

Bioscience patent applications are frequently filed as provisional applications, applications which are not examined and do not need to have claims. The provisional application must be converted to a regular “utility” application within one year of the filing of the provisional application. The lack of formalities required for provisional applications has made them particularly popular with universities and bioscience companies, where pending publication and presentation deadlines sometimes require immediate filings and the desire to stay ahead of one’s competitors urges immediate, if incomplete, provisional filings. Indeed, a “cover sheet” provisional can be filed and is so named because the inventor’s manuscript or data are filed without substantial change. The practice has always been fraught with danger; however, the coming changes to U.S. patent law render the practice even more dangerous and may suggest a more immediate conversion to a complete utility application and a review of pending provisional applications prior to the first-to-file transition. 

Contributing Author

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Gregory Nelson

Gregory A. Nelson is a partner in the West Palm Beach office of Novak Druce + Quigg. He represents clients in all phases of patent, trademark...

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